All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Wednesday, March 2, 2011

Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll finish my discussion of Mistake #7: Using attorney argument when evidence is required. My previous post in this series – Mistake #7.0 – covered some of the scenarios where you may need evidence rather than attorney argument:

Whether a specification is enabling

Whether a reference is enabling

Meaning of a claim term

Knowledge of a POSITA

The remaining two scenarios, covered in today's post, are:

Teachings of a reference

Modifying or combining references

The first four BPAI decisions in today's post show that when you stray from the explicit teachings of the reference, the Board may find that attorney argument is not enough.

Ex parte Matsushita involved writing servo information to a disk drive. One of the claims required a control mechanism adapted to "enable writing ... during a subsequent revolution using the WORF data." The patentee argued that the prior art "is believed to only use WORF data obtained before servowriting for that track begins" and “in Schmidt, the WORF data used to write to a target track is apparently produced before any writing to the target track is enabled.” (Emphasis added.) The Board dismissed this as speculative argument rather than evidence:

Matsushita’s argument is not persuasive. Matsushita does not explain why it believes that Schmidt obtains WORF data only before servowriting to a track begins. Matsushita’s belief amounts simply to speculative argument by its counsel as to how Schmidt’s system may operate which is unsupported by objective evidence, such as expert testimony. Argument of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A. , 129 F.3d 588, 595 (Fed. Cir. 1997).

The Board then went on to explain how the reference did disclose the claimed limitation.

The Applicant in Ex parte Jacquot made an argument which the Board saw as being contradictory to the teachings of the reference. The reference disclosed "device emulation" while the claims recited "device simulation." The Applicant argued that the two were not functionally equivalent. But the Board noted that, to the contrary, the reference "apparently uses the two terms interchangeably and even explicitly describes that the computing device, e.g, S/390 can be simulated." The BPAI further explained that "the Applicant has not directed us to evidence to support its argument that emulation and simulation are not the same as far as Shmid is concerned." (Emphasis added.)

An Applicant statement about the teachings of reference which is merely conclusory may lead the Board to say that evidence is required. Ex parte Mayer involved clams to a chemical composition. The Applicant argued that "thermoplastic vinyl polymer B is dissolved in and reacted with polyisocyanate A to produce the composition of claim 1," whereas the "references disclose polymer/polyisocyanate dispersions." "One skilled in the art would readily appreciate that there is a difference between modified polyisocyanates and dispersions, particularly in view of the teachings in Appellants' specification." The Board found this statement to be "without evidentiary support" and stated that "attorney argument and conclusory statements, absent evidence, are entitled to little, if any, weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)."

The technology in Ex parte Intel Corp. related to a method of manufacturing a microsensor. The claim at issue included the step "forming said backside cavity while maintaining a portion of said substrate in said cavity to act as strengthening strips that extend completely across said backside cavity." The Examiner asserted that the reference taught the "strengthening strip" element by disclosing a layer and a rim which operate to provide mechanical support for the sensor diaphragm. In The Applicant argued that the layer in the reference was a "tiny bit of material" which was "too thin" to perform any support or strengthening function. The Board found that this statement lacked evidentiary support:

We reject Intel's characterization. At the outset, Intel's bare assertion that a structure is too "tiny" if it is 5 microns thick to provide support or strength to a component is unpersuasive. The size or thickness of a structure cannot be taken in a vacuum, without explanation, in evaluating its feasibility as a strengthening strip. Intel also does not support its assertion with any objective evidence, such as declaration testimony. The assertion is simply argument of counsel. Such argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,595 (Fed. Cir. 1997).

The remaining BPAI decisions in today's post show that attorney argument can be insufficient when explaining how references would, or would not, combine. Once again, it seems that straying from the explicit teachings can be viewed as mere speculation.

Ex parte Jarrell involved a collapsible wall hanger, and the Applicant appealed an obvious rejection using a combination of two references. The Applicant attacked the rationale for combining, arguing that "since Bierman’s scaffold has fixed brackets to render the scaffold rigid, it would not have been obvious to modify these fixed brackets to pivotal members in view of Thomas." But the Board dismissed this argument since "Appellant has provided no evidence that replacing Bierman’s welds with pivotal connections would render Bierman’s structure insufficiently rigid." (citing In re Pearson).

The application in Ex parte Doery related to a mail stacker. The Applicant appealed an obviousness rejection and argued that the combination would render one of the reference inoperative. Specifically, the Applicant argued that "if the insert of Caporali were incorporated along the platform of Beauchamp a Z-shaped drop profile between mailpieces could not occur,” which meant that “sufficient time and separation would not be available to dry the printed ink.” The Board dismissed this argument because "Appellant has not provided any evidence to show that the insert block of Caporali is not capable of working with the device of Beauchamp" (citing In re Pearson). The Board then went on to explain why the combination was not inoperative.

My two cents: When explaining the teachings of a reference, the line between what is acceptable attorney argument, and what is not, can be hard to discern. The cases I've read suggest that you're most likely to get into trouble when you make bald assertions and don't tie them to teachings in the reference. If you have support in the reference for your assertions, point to it. If you don't, you should consider submitting a 1.132 affidavit from a person who is more qualified to interpret the reference, i.e., a person of ordinary skill in art.

12 comments:

It is clear from your posts that practitioners often appeal without sufficient evidence in the file. But obtaining a declaration is expensive, and we don't want to incur that cost for every application. If we wait until a decision is made to appeal before preparing the declaration, then we first have to prepare the declaration, file it with a response and RCE (typically), wait for the first post-RCE OA, and file the appeal at that time - a very long wait.

So prior to a decision to appeal, what is everyone's rule-of-thumb about when to prepare a declaration and when to continue just submitting attorney argument? (Asking the client is certainly the right thing to do, but clients usually put the question back to us by asking our advice on what *we* would do.) Thank you

Just like when the Federal Circuit wants to interpret claim language one way or another they'll either state: "it is impermissible to import limitations from the specification into the claims" or "when interpreted in light of the specification, we interpret the claim language as follows ..."

....the BPAI, when choosing to affirm or reverse will rely on standard tricks of the trade. If they want to affirm, they state that the attorney has not presented evidence of "not X" ... despite the Examiner not presenting substantial evidence of "X." Or perhaps they'll just state it was a common sense use of a known feature having a predictable result ... despite any findings being made that the features were known by those skilled in the art are the result was preditable. Or any of a host of different ways the BPAI will find a way to ignore your arguments.

If the BPAI wants to f' with you, they will. It is a matter of the luck of the draw (some are definintely worse than others) and whether your invention seems "worthy" enough. Almost every argument I involves some type of "attorney argument." I simply cannot get a declaration on everything. I probably should get a declaration that says, e.g., that a client is not the same thing as a server because neither the cited prior art or my specifications says that. However, the client has a limited amount of money, and I cannot get a declaration for each of the dozen or three-dozen "attorney arguments" I make in every Appeal Brief.

I really appreciate Karen's blog, but these tips do little for me. I'm looking for practical tips -- not tips for attorneys that has a client willing to pay $25K for amendments because declarations have to be entered for every attorney argument and all these delcarations have to be entered before the Examiner goes final. Also, if you don't want to lose your client's type-B patent term adjustment, you cannot be relying upon RCE's to get this evidence admitted so everything has to be done after the First Office Action.

>not everyone has a client willing to pay >$25K for amendments because declarations >have to be entered

Wow, $25K is a *lot* of time at my bill rate.

I'll assume you have a $500 bill rate. Even so, that's 50 hours for a response with declaration. Even going back and for with the expert / inventor a few times, I'd be surprised if it took 50 hours to draft a response plus dec.

But I haven't done a ton of decs, so maybe you have more data than I do.

You don't realize the scope of what is necessary to provide a perfect response with evidentiary support. Assume that the Examiner is going to go final in the next Office Action. This means if you want your evidence considered by the BPAI, you need it all entered before you Appeal – lest you risk the Examiner denying that the evidence be entered. Also, if done properly, you aren't getting declarations from the inventors – you are finding independent experts in the field that can attest to whatever point you are asserting.

If you are like me, and for an average claim set, you can probably make at least 4-5 different arguments as to the independent claims and argue several dependent claims as well. All of these arguments will include some type of assertion (i.e., X does not equal Y). This is "attorney argument." For every statement that you make, you have to (1) finding the expert; (2) brief the expert; (3) draft the declaration; and (4) clear the declaration with everybody. A single one could easily be a couple grand project. However, you need to do that for every single assertion you make. Essentially, you have to treat it like a mini-litigation where you are providing evidentiary support and experts for everything. In a perfect world, that is what you SHOULD be doing.

Of course, nobody is going to do that because the clients are going to pay for it on 99.9% of patent applications.

The salient point is that providing of "evidence" is something that must be done at the first office action, and since you don't know what is the argument that potentially could win the day, you will NEED to provide evidence for every assertion you make. However, realistically, you have to assume that when you argue that a drain region is not identical to a source region of a semiconductor, that the BPAI won't need evidence for that assertion. However, if they want to f' with you, they'll state that your "attorney argument" is not sufficient and shoot you down.

"Only if you have no skillz does luck even enter the equation."Sorry, the BPAI is populated mostly by former examiners with law degrees (put differently, they are drawing from a very thin talent pool). Probably 1 out of 10 would last 30 days as a clerk for a Federal Circuit judge. When you have an APJ, for example, that quotes a Supreme Court for "Silent implies assent" when that statement was actually pulled, by SCOTUS, from a transcript of a book that was the subject of litigation, then luck does enter the equation. There are a few good APJs. However, when you are dealing with people who don't know the law, then it doesn't what "skillz" you have.

O noeserskates! You might have to pay 1k$ to have your evidence looked at after Final!

Some people. They simply seem to have no grasp on what is going on. You have to wonder how some people manage to get their shoes on in the morning.

"If you are like me, and for an average claim set, you can probably make at least 4-5 different arguments as to the independent claims and argue several dependent claims as well. "

I think you meant to say:

"If you're a tard like me, and for an average claim set, you'll need at least 4-5 different arguments as to the independent claims and argue several dependent claims as well. "

However, Karen is not exactly a tard like you, and she knows that her ability to make 4-5 arguments or more is irrelevant to anything because she has the skills to make 1-3 work for her.

"All of these arguments will include some type of assertion (i.e., X does not equal Y). This is "attorney argument." "

Back it up with some explanation, and possibly evena small note that you're really just arguing the claim construction and whamo, you have SUPER ATTORNEY ARGUMENT. Often much better than evidence.

"Sorry, the BPAI is populated mostly by former examiners with law degrees (put differently, they are drawing from a very thin talent pool). "

I know several of the members myself, personally. Over the years I've come to know a bit about what they're looking for in a rejection, or in an appeal seeking reversal of a rejection. Their talent might be thin, as is perhaps the pool, but that thinness does not begin to compare with the thinness of the lawlyering skills of the majority of attorneys. Indeed, the later is several orders of magnitude larger. So, all things considered, they're doing the best they can given the lemons handed them.

"However, when you are dealing with people who don't know the law, then it doesn't [matter] what "skillz" you have. "

Sure it does. Lawlyering skillz are about more than the application of the lawl. Why are patent attorneys so different than other attorneys in that their skills in persuading, presenting issues in a form readily understandable by their reader, begging, pleading, and throwing themselves upon the mercy of the decision maker are so low?

Is it their mistaken belief that other people, who are not actual judges, especially care about the letter of the law as interpreted by some people somewhere? I think it probably is. They acknowledge in one side of their brain that the side of their brain holding this mistaken belief is mistaken, yet they continue along with their daily business as if they do not understand the ramifications of that mistake.

Is anyone else concerned with the declining level of discourse on this blog? I enjoy reading karen's posts. She is very level headed, pratical, and delivers her ideas with just the right level of aplomb.

Unfortunately, I now waste a lot of time reading comments that just don't measure up. The excessive use so called "urban slang" is rather disturbing. Perhaps I'm showing my age here, but that style of discourse is just plain unacceptable.

Also unacceptable is re-quoting comments and using words like "tard". What is the point of that?

I wish Karen would just delete these comments, but she is probably too busy with real work.

"Is anyone else concerned with the declining level of discourse on this blog? I enjoy reading karen's posts. She is very level headed, pratical, and delivers her ideas with just the right level of aplomb.

Unfortunately, I now waste a lot of time reading comments that just don't measure up. The excessive use so called "urban slang" is rather disturbing. Perhaps I'm showing my age here, but that style of discourse is just plain unacceptable.

Also unacceptable is re-quoting comments and using words like "tard". What is the point of that?

I wish Karen would just delete these comments, but she is probably too busy with real work.

Keep up the great work, Karen! "

And look there, it is yet another bad lawlyer taking offense at the realistic presentation of what he does day in and day out.

Sorry I didn't suger coat it for you kiddo. If you ask really nice maybe I'll try to keep a spoonful of sugar on hand for when I serve another batch of medicine.

BTW:

"Is anyone else concerned with the declining level of discourse on this blog? I enjoy reading karen's posts. She is very level headed, pratical, and delivers her ideas with just the right level of aplomb.

Unfortunately, I now waste a lot of time reading comments that just don't measure up. The excessive use so called "urban slang" is rather disturbing. Perhaps I'm showing my age here, but that style of discourse is just plain unacceptable.

Also unacceptable is re-quoting comments and using words like "tard". What is the point of that?

I wish Karen would just delete these comments, but she is probably too busy with real work.

Keep up the great work, Karen! "

"Is anyone else concerned with the declining level of discourse on this blog? I enjoy reading karen's posts. She is very level headed, pratical, and delivers her ideas with just the right level of aplomb.

Unfortunately, I now waste a lot of time reading comments that just don't measure up. The excessive use so called "urban slang" is rather disturbing. Perhaps I'm showing my age here, but that style of discourse is just plain unacceptable.

Also unacceptable is re-quoting comments and using words like "tard". What is the point of that?

I wish Karen would just delete these comments, but she is probably too busy with real work.

One man's (or woman's) censorship is another man's separating the wheat from the chaff.

The urban slang is from an examiner otherwise known as 6, 6K, or Mr. Delusional. Unless the boss decides to rid us of this stench, the best approach is that once you see the urban slang -- the writing style is easy to spot, just skip to the next post.

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